Canonical “abused trademark law” to target a site critical of Ubuntu privacy

Canonical, the maker of Ubuntu, has been fending off criticism from privacy advocates because the desktop search tool in recent versions of the operating system also searches the Internet. That means if you're searching your desktop for a file or application, you might also see results from Amazon or other websites.

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One person who dislikes Canonical's search tool is Micah Lee, a technologist at the Electronic Frontier Foundation who maintains the HTTPS Everywhere project and is CTO of the Freedom of the Press Foundation. Lee set up a website called "Fix Ubuntu," which provides instructions for disabling the Internet search tool.

"If you're an Ubuntu user and you're using the default settings, each time you start typing in Dash (to open an application or search for a file on your computer), your search terms get sent to a variety of third parties, some of which advertise to you," the website says.

According to Lee, Canonical sent him an e-mail this morning asking him to stop using the Ubuntu logo and also to stop using the word "Ubuntu" in his domain name. Lee reprinted the entire e-mail in a blog post titled, "Canonical shouldn’t abuse trademark law to silence critics of its privacy decisions." The message reads:

Subject: Your Use of Ubuntu
From: ************@canonical.com

Dear Micah,

Canonical Limited (“Canonical”) owns and manages the intellectual property rights in Ubuntu and other associated intellectual property. In addition, Canonical is the owner of numerous trademarks and copyright throughout the world relating to Ubuntu, including Ubuntu logo and the word mark of Ubuntu.

It has been brought to our attention that your website: https://fixubuntu.com/ is using Canonical’s trademarks including Ubuntu logo on your website and Ubuntu word in your domain name. The Ubuntu logo [1] and a screenshot of your website [2] are set out below.

We are really pleased to know your interest in writing about Ubuntu. But whilst we can appreciate the passion Ubuntu inspires, we also have to be diligent to ensure that Ubuntu’s trademarks are used correctly.

To keep the balance between the integrity of our trademarks and the ability to use and promote Ubuntu, we’ve tried to define a reasonable Intellectual Property Policy. You can read the full policy at http://www.canonical.com/intellectual-property-policy. As you can see from our policy, to use the Ubuntu trademarks and Ubuntu word in a domain name would require approval from Canonical.

Unfortunately, in this instance we cannot give you permission to use Ubuntu trademarks on your website and in your domain name as they may lead to confusion or the misunderstanding that your website is associated with Canonical or Ubuntu.

So, whilst we are very happy for you to write about Ubuntu, we request you to remove Ubuntu word from you domain name and Ubuntu logo from your website. We would highly appreciate if you could confirm you have done so by replying this email to us.

To prove its point, the e-mail showed a screenshot of Lee's site with the Ubuntu logo:

The policy Canonical pointed to does say that permission from the company is required to use "any Trademark in a domain name or URL or for merchandising purposes." Lee argued that his use of the Ubuntu logo and the name in his domain is "nominative use" and thus not a trademark violation. "Although I’m perfectly within my rights to continue using both, I’ve decided to remove the Ubuntu logo from the website, but add a disclaimer—because it seems like a nice thing to do," he wrote. (The EFF, for what it's worth, has published this list of tips to help makers of parody sites avoid getting shut down.)

That new disclaimer reads as follows:

Disclaimer: In case you are either 1) a complete idiot; or 2) a lawyer; or 3) both, please be aware that this site is not affiliated with or approved by Canonical Limited. This site criticizes Canonical for certain privacy-invading features of Ubuntu and teaches users how to fix them. So, obviously, the site is not approved by Canonical. And our use of the trademarked term Ubuntu is plainly descriptive—it helps the public find this site and understand its message.

His website still has the same domain name that includes the word "Ubuntu." Canonical doesn't seem to have a problem with other websites using the word Ubuntu in their domain names, such as "OMG! Ubuntu!," a news site that writes enthusiastically about the operating system.

We've contacted Canonical about the e-mail sent to Lee, but haven't heard back yet.

While Ubuntu's code is open source and free to everyone, Canonical obviously hasn't given up its right to enforce its trademarks. Lee argued that the company's stance against his website "isn't very much in the spirit of open source," though. The code for Fixubuntu.com is also open source—Lee invited Canonical to "submit a patch" if it decides to help out "in a more productive way."

The EFF has already sent a response to Canonical, in a letter from EFF Staff Attorney Daniel Nazer. "While we appreciate the polite tone of your letter, we must inform you that your request is not supported by trademark law and interferes with protected speech," the letter says. "The website criticizes Canonical Limited for certain features of Ubuntu that Mr. Lee believes undermine user privacy and teaches users how to fix these problems. It is well-settled that the First Amendment fully protects the use of trademarked terms and logos in non-commercial websites that criticize and comment upon corporations and products. Mr. Lee's site is a clear example of such protected speech. Neither Mr. Lee, nor any other member of the public, must seek your permission before engaging in such constitutionally protected expression."

UPDATE: Canonical responded to Ars, providing the following statement: "To protect the Ubuntu brand, we need to ensure that wherever you see the Ubuntu logo, it’s an authentic part of the Ubuntu community. We have a public policy (http://www.canonical.com/intellectual-property-policy), which is open and accessible, and protects the brand. It states where you can freely use the Ubuntu brand and where a licence is needed. Trademark law requires us to protect our trademarks, so where needed we will always start a dialogue to ensure the trademarks are used properly to avoid confusion."

Canonical founder Mark Shuttleworth later called the letter a mistake in his blog, saying, "someone at Canonical made a mistake in sending the wrong response to a trademark issue out of the range of responses we usually take. That has been addressed, and steps are being taken to reduce the likelihood of a future repeat."

Hahaha. I hope that guy finds his website shutdown and him fined 100 million dollars. Nobody is allowed to criticize Ubuntu or Linux in general (I am being sarcastic about the attitude the FOSS people have hallucinating that they're OS is better than Windows).

I hope you're kidding with that. No FOSS supporter worth his salt would approve of this type of censorship. If this story is true (and I'm honestly hoping someone's calender is about 5 months off), Canonical just fired a boomerang torpedo and they'll be responsible for sinking their own battleship.

Mr Lee's free speech is protect just like Canonical's copyright and trademarks are protected . And there is no reason or justification to argue that protecting your copyrights and trademarks is contrary to open source .

1) Pretty much everybody here knows that protecting copyrights is essential to open source, e.g. enforcing open source and libre licensing terms. Totally irrelevant. 2) Going after the critical voice is not a valid use of trademark protections. See: Glenn Beck.

Mr Lee's free speech is protect just like Canonical's copyright and trademarks are protected . And there is no reason or justification to argue that protecting your copyrights and trademarks is contrary to open source .

1) Pretty much everybody here knows that protecting copyrights is essential to open source, e.g. enforcing open source and libre licensing terms. Totally irrelevant. 2) Going after the critical voice is not a valid use of trademark protections. See: Glenn Beck.

1)You say?

Quote:

. Lee argued that the company's stance against his website "isn't very much in the spirit of open source,"

Mr Lee's free speech is protect just like Canonical's copyright and trademarks are protected . And there is no reason or justification to argue that protecting your copyrights and trademarks is contrary to open source .

1) Pretty much everybody here knows that protecting copyrights is essential to open source, e.g. enforcing open source and libre licensing terms. Totally irrelevant. 2) Going after the critical voice is not a valid use of trademark protections. See: Glenn Beck.

1)You say?

Quote:

. Lee argued that the company's stance against his website "isn't very much in the spirit of open source,"

2) Oh, so this is just about politics ... mmm

What does that even mean?

It means, Mr IrishMonkey, that Mr Lee have no leg to stand on with his nonsensical whining

I personally find it rather astonishing at how effectively the leadership at Ubuntu is managing to turn themselves from the beloved darlings of the Linux/FOSS world into the despised douche-bags of the Linux/FOSS world.

Mr Lee's free speech is protect just like Canonical's copyright and trademarks are protected . And there is no reason or justification to argue that protecting your copyrights and trademarks is contrary to open source .

1) Pretty much everybody here knows that protecting copyrights is essential to open source, e.g. enforcing open source and libre licensing terms. Totally irrelevant. 2) Going after the critical voice is not a valid use of trademark protections. See: Glenn Beck.

1)You say?

Quote:

. Lee argued that the company's stance against his website "isn't very much in the spirit of open source,"

2) Oh, so this is just about politics ... mmm

What does that even mean?

It means, Mr IrishMonkey, that Mr Lee have no leg to stand on with his nonsensical whining

Criticism and satire are both fair use exceptions to trademark and copyright. The owner of Fix Ubuntu is completely within his rights to continue using the logo for those purposes. Ever see The Daily Show, notice how often they don't get sued when using the Arby's logo to make fun of Arby's?

Mr Lee's free speech is protect just like Canonical's copyright and trademarks are protected . And there is no reason or justification to argue that protecting your copyrights and trademarks is contrary to open source .

So that's the tactic now. Infringe the copyright of some institution or company you are bashing. The company or institution ask you to remove their material improperly used in your blog or website .So you start whining aloud that your free speech is being attacked (which is not true at all) and play the victim .

I've seen this happening too often.

Did you actually read the fine article? Your assertions are addressed therein. If you disagree, you will have to provide some actual argument(s) to support your stance (vague, non-specific slurs don't qualify). Keep in mind that the legal community seems to disagree with your position, so casual, gut-level off-the-cuff hand-waving is not likely to get you very far..

It's interesting to watch the real-time astroturfing going on in these comments. Fortunately, the good Arsians seem to have a handle on it.

As the the article itself, well... being a proponent of Ubuntu from about 6.something to maybe 8.something... I find it terribly sad how what used to be a good OS seems to have been poisoned by something that reeks faintly of Ballmerism.

Mr Lee's free speech is protect just like Canonical's copyright and trademarks are protected . And there is no reason or justification to argue that protecting your copyrights and trademarks is contrary to open source .

1) Pretty much everybody here knows that protecting copyrights is essential to open source, e.g. enforcing open source and libre licensing terms. Totally irrelevant. 2) Going after the critical voice is not a valid use of trademark protections. See: Glenn Beck.

1)You say?

Quote:

. Lee argued that the company's stance against his website "isn't very much in the spirit of open source,"

2) Oh, so this is just about politics ... mmm

1) It's a valid criticism he's making, but it is totally besides the point. The point is 2). And 2) is that Canonical is not acting in good faith to prevent consumer confusion a la trademark infringement, because there is no infringement. So Canonical is the one without a leg to stand on here, as my link to a previous and similar example demonstrates. They can't use trademark law to try and bully him into changing URLs like they are doing. This is all in the article if you'd care to read it.

You know, I've defended a lot of Canonical's practices, but if this is the way they're going to play things, then fuck them. When you're trying to use the courts to silence your critics, you've gone too far.

To keep the balance between correcting a shitty product and nominative use of trademarks, we’ve defined a reasonable Intellectual Property Policy. You can read the full policy at www.fixubuntu.com/intellectual-property-policy. As you can see from our policy, to use the Ubuntu trademarks and Ubuntu word in a nominative fashion requires no approval from Canonical.

Fortunately, in this instance we can give ouselves permission to use Ubuntu trademarks on our website and in our domain name as only an idiot would confuse our website as being associated with Canonical or Ubuntu.

It's interesting to watch the real-time astroturfing going on in these comments. Fortunately, the good Arsians seem to have a handle on it.

As the the article itself, well... being a proponent of Ubuntu from about 6.something to maybe 8.something... I find it terribly sad how what used to be a good OS seems to have been poisoned by something that reeks faintly of Ballmerism.

I am here to inform you that my client, Steve Ballmer, has requested that you not use his name in such a derogatory manner.

The Angry Renaissance Geek Limited ("Angry") owns and manages the intellectual property rights of the word Whilst. We appreciate you promoting our brand in your Streisand letter but we must insist that you cease using the word post-haste unless we will be forced to go medieval on your asses.

It's interesting to watch the real-time astroturfing going on in these comments. Fortunately, the good Arsians seem to have a handle on it.

As the the article itself, well... being a proponent of Ubuntu from about 6.something to maybe 8.something... I find it terribly sad how what used to be a good OS seems to have been poisoned by something that reeks faintly of Ballmerism.

I am here to inform you that my client, Steve Ballmer, has requested that you not use his name in such a derogatory manner.

While they can certainly ask for this guy to shut down his website and send letters to that effect as a matter of trademark law they don't seem to have a leg to stand on so good luck trying to get the government to try and enforce their wishes. I'm pretty sure that they can tell Canonical to piss off and that that's the end of it.

Used to be such a beauty of a linux distro back at 10.10. Now you have shuttleworth trying to sell us the ubuntu phone for HOW MUCH?!! Its all downstream from Debian anyway. And with this Mir crapola recently Mark seems to really be headed somewhere. Hell if I know where that is or want to go there. Thanks again M.S.... FOR NOTHING!!!!!

I thought that including 'Apps available for download' in the "Dash" was obnoxious. If I want to look for new applications I'll search for them deliberately, but do not want them cluttering up and obscuring the list of those I have installed on my own personal computer. Then, of course, the Amazon search came along. If it wasn't for PPAs providing easily and frequently updated much needed software, I would have stopped using Ubuntu not long ago.

Now it appears that Canonical is attempting to muzzle critics. How much longer before the community that helped prop up Ubuntu moves elsewhere?